Author: Yung-Chieh Hung (2007-03-13);
recommendation: Yeh-Liang Hsu (2007-03-13).
Note: This article is Chapter 1 of Yung-Chieh Hung’s
PhD thesis “Development of an Innovative Patent-based Design Methodology.”
Chapter 1. Introduction
1.1 An innovation design method based on design-around approach
plays an important role to the success of a product’s development. Design
process influences performance, quality, cost, and the development time of the
product. Most researchers in design process try to establish a structured model
to describe or facilitate design by dividing the design process into several
sequential phases, based on the essential activities that the designers perform
or should perform. These activities are often presented in a flow chart manner,
with feedback loops showing the iterative returns to the earlier phases. Ulrich
and Eppinger  pointed out that structured design process models are
valuable because they make the decision process explicit, they act as
“checklists” of the key steps in a development activity, and they are largely
Systematic product design processes
commonly seen in research literature or design textbooks often start with finding
a need, specification development, conceptual design, detail design, to
production. Such design processes are very useful for innovative design. Innovative design mythologies such as
analogy, brain storming, and TRIZ (Theory
of Inventive Problem Solving) are often used to generate the design solutions. However, the design problem constantly faced by engineering designers across
industries is how to design around existing patents [Glazier, 1990], which requires a completely different design approach and knowledge.
This type of design problem is often a local innovation of an existing patent. The rules of patent infringement judgment present the major constraints to
such design problems, and designers may have to sacrifice the performance of
the product in order not to infringe on existing patents.
patent analysis has almost been a standard process in the early stage of
product development in industry, few researches in design processes consider competition or constraints in the form of existing
patents or fully utilized the information obtained from patent analysis. Chen
and Chen  integrated the systematic design process and design patent
protection mechanism to develop an adaptive design process. Zhang and Chen
 presented a process based upon the extension theory and TRIZ to design
around patents and resolve conflictive problems. Chang et al.  proposed
an auxiliary methodology for creative mechanism design. This methodology is a
systematic approach based on modification of existing devices for the
generation of all possible topological structures of mechanisms to avoid
existing designs that have patent protection.
An innovative design process is
analogous to an unconstrained optimization problem. The goal is to maximize the
performance of the design. Existing patents are often the most difficult
constraints faced by engineering designers in industry. This type of design
problem can be analogous to a constrained optimization problem. In the design
process, priority is given to avoiding infringement with other existing
patents, even though the performance of the design may have to be sacrificed.
In a constrained optimization problem,
the optimum point often occurs on the boundary of the feasible domain.
Similarly, a new design is often inspired by an existing product or technology,
and a new product is often generated by designing around an existing patent. Through
construing and analyzing existing patents and comparing the disclosure of
patents, time and cost for new product development can be greatly reduced. Moreover,
design process based on designing around current patents can assist designers
to evade the patent traps and to avoid patent infringement.
Designing around is based on the process and rule
of the patent infringement judgment to develop the design that has the
substantial difference with the scope of claims of existing patents. Morgan, Lewis & Bockius LLP  proposed five approaches
for designing around granted patent:
(1) Investigate the file wrapper to study which scope of
claims has been surrendered by the patent holder during the prosecution.
(2) Apply the prior art.
(3) Eliminate one or more claimed technological
(4) Change the functions or objectives of technological
(5) Use the techniques mentioned in the “background of the invention” of the
specification since these techniques have been considered as nonequivalent to
those in the claims.
Nydegger and Richards  proposed three possible strategies for designing around an existing
Reduce the number of elements
in the claims to satisfy the full elements rule.
Use the method of substitution
to make the accused subject matter different from the techniques disclosed in
the claims to prevent literal infringements.
Substantially change one of the
constitutive requirements of way/function/result to prevent infringements
according to the doctrine of equivalents.
These designing around methods provide a
good guideline for avoiding patent infringement. Note that each of the methods
described above presents a new design problem to be solved. Innovative design
methodologies are still needed to generate real engineering solutions for the
new design problems.
1.2 Purpose of this research
research proposes a patent-based design process by systematically integrating
patent information, the rules of patent infringement judgement, strategies of designing around patents, and the innovation
design methodology. The
purpose of this design process is to assist enterprises to enhance the
efficiency of product development, lower the possibility of patent infringements,
and increase the patentability of results of innovation.
on the discussion in the previous section, we hope to achieve 4 goals with this
utilize patent information in the design process.
how patent infringement can be avoided before working on generating a new
a new design based on designing around existing patents.
innovative design methodology such as TRIZ to facilitate the generation of a
new design concept.
Figure 1 shows
the conceptual flowchart of this patent-based design process. To start with,
the designer conducts standard patent search and analysis to identify the related
patents to be designed around and to collect functions and core techniques of
each related patent. Each patent is then symbolized by a “design matrix” converted from the design parameters
and functional requirements of the patent. This design matrix representation is
inspired by the “axiomatic design” methodology proposed by Suh , and will
be discussed in later chapters.
matrices of the patents can be manipulated mathematically. Rules of
infringement judgment and design around strategies can be converted into mathematical operators of the design matrices. In this research, a design-around algorithm is developed to generate
a new design matrix that does not infringe with design matrices of existing
patents. There can be many solutions that satisfy the constraints. In our
algorithm, the design matrix which is the smallest variation of one of the
design matrices of existing patents to be designed around will be chosen first.
The new design represented by this design matrix will also be a local variation
of an existing patent.
Based on this existing patent, TRIZ is used to
transform the new design matrix back into a real engineering design. However, this transformation may fail because there may not be a
feasible design corresponding to the new design matrix generated by the
algorithm. If TRIZ fails to generate a feasible design, the algorithm is
triggered again to generate the next design matrix which satisfies the
constraints and is the smallest variation of one of the design matrices of the
existing patents. Finally, a new design concept is generated.
Figure 1. Conceptual flowchart of the patent-based
1.3 Organization of the dissertation
The rest of the
dissertation is organized as follows. In chapter 2, a brief introduction to
TRIZ (Theory of Inventive Problem
Solving) is presented. Then a novel design concept for a total knee prosthesis is generated to demonstrate the application
procedure of TRIZ.
Chapter 3 starts
to explore this patent-based design process. An integrated process for
designing around one existing patent through TRIZ is proposed. This process
integrates patent design around
strategies, innovative design methods in TRIZ and rules
of patent infringement judgment to systematically design around existing
patents and increase the patentability of results of innovation. Redesign of a portable magnetic impact tool to design around an
existing patent is used to illustrate the integrated process. In Chapter
3, design matrices have not been used to represent the existing patents.
4 discusses how the related patents obtained from patent analysis are
symbolized using the concept derived from axiomatic design. Chapter 5 discusses
the development of the design around algorithm and the integration with TRIZ to
generate the real engineering design concept. The example of a portable magnetic impact tool is used again to illustrate the detailed steps of
implementation and required considerations of the patent-based design process.
Chapter 6 gives
another example to demonstrate the application process of this patent-based
design process. Finally Chapter 7 gives conclusion on the accomplished studies,
and the further works in this study.
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Journal of Engineering in Medicine, v.218, p.451-459, 2004.
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adaptive design process generated by the integration of systematic design
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GENERAL SYSTEMS, v.33, p.635-653, 2004.
Glazier, S. C., “Patent Strategies for Business,” Law & Business Institute, 1990.
Morgan Lewis & Bockius LLP, “Intellectual
Property Handbook,” 5th Ed,
PA: Morgan Lewis & Bockius
Nydegger, R. and Richards, J. W., “Design –Around
Techniques,” in Lundberg et al., Electronic and Software
Patents, The Bureau of National Affairs, Inc., Washington, D.C., 2000.
Suh, N. P., “Axiomatic Design: Advances and
Applications,” New York: Oxford University
and Eppinger, S.D.,
“Product Design and Development,”
McGraw-Hill, New York, 1995.
T. and Chen, J. H., “Application of extension theory and TRIZ to
innovation design,” Industrial Engineering
Journal, v.7, p.33-37, 2004.